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Trade Marks

FED

This publication assists practitioners with trade marks and intellectual property law for businesses, including applications and infringements.

1 Matter Plan

Overview

The commentary covers registering a trade mark, use, assignment, licensing and enforcement.

The Reference materials folder includes guidance on electronic signing and witnessing, and the comprehensive Getting the matter underway folder includes compliance and client care documents. Using the extensive Retainer Instructions when gathering information ensures nothing is missed.

Precedents in this publication include:

  • Letters to the client for:
    • search results and advice;
    • in anticipation no objection;
    • advising on problems with an application;
  • Intellectual property licence.
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1 Matter Plan Included

  • Item icon ALERTS - Nil
  • Item icon Full Commentary - Trade Marks
  • Folder icon Reference materials
    • Item icon AI Prompts
      An AI prompt defines a specific task for AI to perform, like drafting a particular document, and provides clear instructions on how to execute that task. The goal is for the AI to quickly create a useful first draft of a document, which the user verifies and refines into a final version, ultimately ...

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    • Item icon Looking to the Future
    • Item icon Electronic Signing and Witnessing
    • Item icon 101 Costs Answers
    • Item icon Further information
  • Item icon Overview
    A trade mark is a way of identifying a unique product or service and distinguishing a business from other traders. Sometimes referred to as a brand, trade marks can help customers discern the quality of a product or service. Trade marks can be extremely valuable. At common law, a person does not ...

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  • Folder icon A. Getting the matter underway
    • Item icon File cover sheet - Trade marks
    • Item icon To do list - Trade marks
    • Item icon First steps
    • Item icon Client details and verifying identity
    • Item icon Retainer instructions - Trade marks
    • Item icon Conflict of interest check
    • Item icon Initial letter to client enclosing costs agreement - Trade marks
    • Folder icon Library of costs agreements
      • Folder icon Australian Capital Territory
        • Item icon Costs agreement - ACT
        • Item icon Scope of work - Trade marks
      • Folder icon New South Wales
        • Item icon Costs agreement - NSW
        • Item icon Standard costs disclosure form for clients - Fees under $3000
        • Item icon Scope of work - Trade marks
      • Folder icon Northern Territory
        • Item icon Costs agreement - NT
        • Item icon Scope of work - Trade marks
      • Folder icon Queensland
        • Item icon Initial letter to client enclosing costs agreement
        • Item icon Costs agreement - QLD
        • Item icon Abbreviated costs disclosure - Costs under $3000
        • Item icon Scope of work - Trade marks
      • Folder icon South Australia
        • Item icon Costs agreement - SA
        • Item icon Scope of work - Trade marks
      • Folder icon Tasmania
        • Item icon Costs agreement - TAS
        • Item icon Scope of work - Trade marks
      • Folder icon Victoria
        • Item icon Costs agreement - VIC
        • Item icon Standard costs disclosure form for clients - Fees under $3000
        • Item icon Scope of work - Trade marks
      • Folder icon Western Australia
        • Item icon Costs agreement - WA
        • Item icon Standard costs disclosure form for clients - Fees under $3000
        • Item icon Scope of work - Trade marks
    • Item icon Time and costs estimates
    • Folder icon If required - Updating costs disclosure
      • Item icon Letter to client updating costs disclosure
      • Item icon Charge securing costs
      • Item icon Guarantee securing costs
      • Folder icon Costs disclosure before settlement in litigation matters
        • Item icon Letter to client - Costs disclosure before settlement - NSW, VIC, and WA
        • Item icon Letter to client - Costs disclosure before settlement - QLD, SA, TAS, ACT, and NT
    • Folder icon General deeds, agreements, execution clauses, and statutory declarations
      • Item icon Deeds and Agreements
      • Folder icon Deeds
        • Item icon Deed for general use
        • Item icon Deed of guarantee
        • Item icon Deed of release
        • Item icon General deed of indemnity
        • Item icon Deed of assignment of agreement
        • Item icon Deed of gift
        • Folder icon Library of standard clauses for deeds
          • Item icon Amendment
          • Item icon Confidentiality for defined information - All parties
          • Item icon Confidentiality for defined information - One party
          • Item icon Confidentiality for terms of deed - All parties
          • Item icon Confidentiality for terms of deed - One party
          • Item icon Costs
          • Item icon Counterparts
          • Item icon Dispute resolution
          • Item icon Events beyond control
          • Item icon Governing law and jurisdiction
          • Item icon Interpretation
          • Item icon No assignment
          • Item icon Notices
          • Item icon Severance
          • Item icon Waiver
          • Item icon Whole agreement
      • Folder icon Agreements
        • Item icon Agreement for general use
        • Item icon Heads of agreement
        • Item icon Non-disclosure agreement - Formal
        • Item icon Non-disclosure agreement - Informal
        • Folder icon Library of standard clauses for agreements
          • Item icon Amendment
          • Item icon Confidentiality for defined information - All parties
          • Item icon Confidentiality for defined information - One party
          • Item icon Confidentiality for terms of agreement - All parties
          • Item icon Confidentiality for terms of agreement - One party
          • Item icon Costs
          • Item icon Counterparts
          • Item icon Dispute resolution
          • Item icon Events beyond control
          • Item icon Governing law and jurisdiction
          • Item icon Interpretation
          • Item icon No assignment
          • Item icon Notices
          • Item icon Severance
          • Item icon Waiver
          • Item icon Whole agreement
      • Folder icon Execution clauses
        • Folder icon Library of execution clauses for agreements
          • Item icon Attorney
          • Item icon Authorised officer
          • Item icon Company
          • Item icon Company - Sole director
          • Item icon Individual
          • Item icon Individual - No witness
        • Folder icon Library of execution clauses for deeds
          • Item icon Attorney
          • Item icon Authorised officer
          • Item icon Company
          • Item icon Company - Sole director
          • Item icon Individual
      • Folder icon Statutory declarations
        • Item icon Commonwealth statutory declaration
        • Item icon Statutory declaration - blank - ACT
        • Item icon Statutory declaration - blank - NSW
        • Item icon Statutory declaration - blank - VIC
        • Item icon Statutory declaration - blank - QLD
        • Item icon Statutory declaration - blank - TAS
        • Item icon Statutory declaration - blank - SA
        • Item icon Statutory declaration - blank - WA
        • Item icon Statutory declaration - blank - NT
        • Item icon Standard annexure note for documents
      • Item icon Standard annexure note for documents
  • Folder icon B. Application for registration
    • Item icon Classes of goods and services
      When a party applies to register a trade mark, they must provide a description of the goods or services for which they use or intend to use the trade mark. These goods and services need to be identified as falling into one or more classes. Schedule 1 of the Trade Marks Regulations 1995 (Cth) ...

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    • Item icon Pre-application searches
      IP Australia maintains a database of all registered trade marks and applications for registration. How to search existing trade marks can be searched to determine whether or not a proposed trade mark may be refused on the basis of it being identical or confusingly similar to an existing ...

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    • Item icon Letter to client with search results and advice
    • Item icon Filing the application
      Regulation 4.1 of the Trade Mark Regulations 1995 (Cth) provides that applications must be in an approved form. To prepare and file the client’s application, the following information is required:

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    • Item icon Application to register a trade mark
    • Item icon IP Australia - Online application to register a trade mark
    • Item icon Letter to IP Australia if lodging hardcopy application
    • Item icon IP Australia - Trade mark fees
    • Item icon Examination reports
      All applications will be examined by IP Australia under s 31 of the Trade Marks Act 1995 to ensure they comply with the Act. Most applications are accepted at this stage. However, if the trade marks examiner considers it is not registrable then an adverse examination report will be sent to the ...

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    • Folder icon If required - Expedited examination
      • Item icon Request for expedited examination of a trade mark application
    • Item icon Letter to client advising application lodged
    • Item icon Letter to client application lodged enclosing notice of filing
    • Item icon Acceptance
      Once the examiner’s objections have been overcome, or in the absence of any objections, the application will be published in the Australian Official Journal of Trade Marks as accepted. For two months after publication, the application may be opposed. The earliest this advertisement occurs is five ...

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    • Item icon Letter to client advising application accepted for publication
    • Item icon Letter to client advising notice of early acceptance
    • Item icon Letter to client in anticipation no objection
    • Item icon Letter to client advising problems with application
    • Folder icon If required - Opposition
      • Item icon Declaration
      • Item icon Opposition
        Statistically, few trade mark applications are opposed. The usual reason for opposition is a claim by the owner of another trade mark that the application is identical or similar to theirs. This could be a trade mark they have registered or filed, or one used for some time during trade. Other ...

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      • Item icon Notice of intention to oppose
    • Item icon Amending an application
      Trade mark applications can be withdrawn or amended in some circumstances. It is possible for an applicant to reduce the scope of the goods or services for which their trade mark is registered. For example, remove a class or delete some of the goods or services.

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    • Item icon Request to amend trade mark application or registration under s63 or s83
    • Item icon Withdrawing an application or cancelling a registration
      An application can be withdrawn at any stage up to registration via the Withdrawal of Trade Mark Application (Prior to Registration) form. It may be appropriate to withdraw an application if it is opposed and the prospects of defending the opposition appear low. However, if an opposition is lodged, ...

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    • Item icon Withdrawal of trade mark application (prior to registration)
    • Item icon Cancellation of an existing in force trade mark registration
    • Item icon Administrative changes to the registration
      Administrative changes to a trade marks registration, such as change of applicant’s name or address details, are made via online services, or by using the forms Request for Amendment – Owner Name and or Address and Request for Amendment – Address for Service. These forms are not used to record ...

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    • Item icon IP Australia - Request for amendment – Owner name and or address
    • Item icon IP Australia - Request for amendment - Address for service
    • Item icon International trade marks
      Australia is a signatory to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol), which covers international registration of trade marks. This provides Australian applicants with advantages when seeking protection for trade marks in any ...

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  • Folder icon C. Use, assignment, licensing, and enforcement
    • Item icon Assignment and transmission of a trade mark
      Assignment or transmission of a trade mark is the process by which the ownership of a registered trade mark, or a trade mark being applied for, is passed from one party to another. Section 6 of the Trade Marks Act 1995 distinguishes between assignment and transmission. Assignment is a ...

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    • Item icon Assignment of trade mark agreement
    • Item icon Request for a full assignment or transmission of a trade mark (full change in ownership)
    • Item icon Request for a partial assignment or transmission of a trade mark (partial change in ownership)
    • Item icon Licensing
      The client may, as part of an overall asset protection strategy which separates business assets from trading risk, wish to licence the use of the trade mark owned by an asset-holding entity to a trading entity. Licensing involves granting another party permission to use the trade mark in compliance ...

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    • Item icon Intellectual property licence
    • Item icon Enforcing rights
      It is important to take quick and decisive action if a client suspects their rights in intellectual property connected with their business are being, or are in danger of being, infringed. If intellectual property rights are not enforced, their commercial value is quickly eroded.

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    • Folder icon IP Australia - Trade Marks
      • Item icon Application for a hearing
      • Item icon Application for an award of costs
      • Item icon Application for an extension of time (for application for registration of a trade mark between 15 and 21 months after the first report)
      • Item icon Application for an extension of time under section 224 for acceptance
      • Item icon Application for removal - cessation of protection for non-use
      • Item icon Application for suspension of a trade mark opposition for the purpose of negotiations
      • Item icon Application to record a claim to interest or right in a trade mark
      • Item icon Application to register a trade mark
      • Item icon Cancellation of an existing in force trade mark registration
      • Item icon Declaration
      • Item icon Notice of intention to defend
      • Item icon Notice of intention to oppose
      • Item icon Payment form for credit cards, cheques and money orders remittance details
      • Item icon Payment of trade mark registration fee
      • Item icon Request for a full assignment or transmission of a trade mark (full change in ownership)
      • Item icon Request for a partial assignment or transmission of a trade mark (partial change in ownership)
      • Item icon Request for deferment of acceptance
      • Item icon Request for expedited examination of a trade mark application
      • Item icon Request to amend trade mark application or registration under s63 or s83
      • Item icon Request to discontinue cooling-off period
      • Item icon Statement of grounds and particulars
      • Item icon Withdrawal of a notice or service request
      • Item icon Withdrawal of trade mark application (prior to registration)
  • Folder icon D. Finalising the matter
    • Item icon Final letter to client advising trade mark registered
    • Item icon Final letter to client advising trade mark not registered
    • Folder icon Example invoices incorporating notification of rights
      • Item icon Example invoice incorporating notification of client's rights - NSW
      • Item icon Example invoice incorporating notification of client's rights - VIC
      • Item icon Example invoice incorporating notification of client's rights - QLD
      • Item icon Example invoice incorporating notification of client's rights - SA
      • Item icon Example invoice incorporating notification of client's rights - TAS
      • Item icon Example invoice incorporating notification of client's rights - ACT
      • Item icon Example invoice incorporating notification of client's rights - NT
      • Item icon Example invoice incorporating notification of client's rights - WA
    • Item icon Closing the file
    • Item icon File closing checklist
  • Item icon Comments and suggestions for By Lawyers

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